Chapter XLV: Section III: Infringement of the Copyright

=Prohibited Acts and Remedies.=--It is an offence "for any print-seller or other person whatsoever"[836]--

1. To engrave, etch, or work, or in any manner copy and
sell the protected work.
2. To print, reprint, or import for sale any pirated copy.
3. Knowingly to publish, sell, or expose for sale, or in
any other manner dispose of any pirated copy.
4. To cause or procure any of these acts to be done.

For any such offence the remedy is an action in the High Court for--

i. Forfeiture of plates and sheets to proprietor for destruction.
[837]
ii. Penalty of 5s. for every published copy.[838]
iii. Damages.[839]
iv. Injunction.[840]
v. Inspection and Account.[841]

Further it is an offence--

5. Innocently to publish, sell, or expose for sale, any
pirated copy.[842]
6. To make a copy or copies, whether for sale or not.[843]
7. To cause or procure any of these acts to be done.

For any such offence the remedy is an action in the High Court for--

i. Damages.[844]
ii. Injunction.[845]
iii. Inspection and Account.[846]

Penalties and delivery of plates or copies may also be recovered by summary proceeding before any two justices having jurisdiction where the party offending resides.[847]

_Guilty Knowledge._--It will be noticed that in order to recover penalties and forfeiture of copies under 8 Geo. II. c. 13, for the offence of selling a piratical copy, it must have been committed knowing the copy to have been produced without consent. In 17 Geo. III. c. 57, however, the offence for which an action for damages lies is merely "selling," thus not requiring proof of guilty knowledge. It has been contended that the requirement of guilty knowledge in 8 Geo. II. c. 13, should be read into 17 Geo. III. c. 57, and the action of damages provided by the latter statute applied to guilty selling only. This contention has been rejected as erroneous.[848]

_Limitation of Action._--Actions for penalties under the Acts must be brought within three months of the discovery of the offence sued on[849] and within six months after the committal of such offence.[850]

There is no express limitation in the Acts in respect of actions for damages under 17 Geo. III. c. 57, and therefore such action will not be barred for six years.[851]

_Costs._--The litigant if successful in an action for infringement is to recover "full costs."[852] This proviso, however, has been construed to mean nothing more than ordinary costs taxed as between party and party.[853] Probably, however, they may be claimed as of right and are not in the discretion of the Court under Rules of the Supreme Court, o. 65, r. 1.[854]

_Copying for Private Use_ will probably be actionable under 17 Geo. III. c. 57;[855] but no penalties could be recovered under 8 Geo. II. c. 13, as under that Act the making must be a making for sale.

=What is a Piratical Copy.=--The right under the Acts is "the sole right and liberty of printing and reprinting the same,"[856] and the prohibition is against "engraving, etching, or working in mezzotinto or chiaro oscuro or otherwise, or in any manner copying, in the whole or in part, by varying, adding to or diminishing from, the main design."[857]

The taking of a material part is a piracy;[858] the copy which contains a material part of a copyright engraving is a piratical copy, and it is an offence to import or sell it.[859]

The copyright in an engraving may be infringed otherwise than by another engraving. Thus a photograph of an engraving is an infringement of the copyright in it.[860]

It is doubtful how far the Engraving Acts protect the design in an engraving. It is clear that when an engraving is taken from a work of art previously existing, such as a pen and ink drawing or a painting, the engraving is only copyright so far as the work of the engraver[861] is concerned; that is to say, apart from the copyright in the drawing or painting, which may or may not be his, the engraver acquires no monopoly[862] of the right to engrave the picture; the fact of his being the first engraver does not prevent others from doing the same, they can only be prevented from copying from his engraving the peculiar execution of the design. In _Dicks_ v. _Brooks_[863] a printed pattern for Berlin wool work was taken from an engraving of the well-known picture "The Huguenot," by Millais. The owner of the copyright in the engraving sued for infringement. It was held that the printed pattern constituted no infringement of his engraving; it contained no reproduction of that which was the engraver's meritorious work in the print. But if the whole invention and design of the engraving is the engraver's own do the Engraving Acts protect the engraver in such design and invention? There is no authority where the point has been expressly considered and decided. It is suggested that the Engraving Acts protect that part of an engraving only which is the result of the engraver's peculiar art; for the rest, for the design, for the invention, for the grouping of the figures, protection can only be obtained under the Act protecting drawings, or (in the case of maps) under the Literary Copyright Act, or at common law. In _Roworth_ v. _Wilkes_[864] Lord Ellenborough considered a copying of the design was an infringement of copyright under the Engraving Acts. The action was in respect of an alleged infringement of certain plates in a treatise on fencing. These plates had been copied in so far as the position of the figures went, but they were represented as differently dressed. His Lordship, in directing the jury, said:

"As to the prints, the question will be whether the defendant has
copied the main design ... it is still to be considered whether
there be such a similitude and conformity between the prints that
the person who executed the one set must have used the others as
a model. In that case he is a copyist of the main design. But if
the similitude can be supposed to have arisen from accident, or
necessarily from the nature of the subject, or from the artist
having sketched designs merely from reading the letterpress of
the plaintiffs work, the defendant is not answerable. It is
remarkable, however, that he has given no evidence to explain the
similitude or to repel the presumption which that necessarily
causes."

In _Martin_ v. _Wright_[865] it was held that when an artist had from sketches of his own produced an engraving, and the defendant had it copied on canvas in colours on a very large scale, with dioramic effect, and publicly exhibited it, such a copying and exhibiting was no infringement of the engraving. The ground of this decision seems to have been partly that the merit of the new work had absorbed the merit of the old. Thus Shadwell, V. C., prefaces his judgment with the remark that "any person may copy and publish the whole of a literary composition provided he writes notes upon it, so as to present it to the public connected with matter of his own."[866] Another ground of the decision seems to have been that the diorama was produced for purposes of exhibition and not of sale. The real point, whether the Acts protected more than that which was peculiar to the engraver's art, does not appear to have been considered either in the argument or judgment. In _Dicks_ v. _Brooks_[867] James, L. J., appears to have been of opinion that 8 Geo. II. c. 3, in protecting the work of an engraver where the invention and design was his own, protected not only the work peculiar to the engraver's art, but the invention and design of the pictures as well.

"These words were intended to give protection for the genius
exhibited in the invention of the design, and the protection was
commensurate with the invention and design."[868]

Bramwell, L. J., however, seems inclined towards the opposite view. He says:

"I do not say that if this were an ordinary engraving with no
picture, a lithograph taken from it would not be a copy. I think
that a photograph taken from it would be a copy. I do not say that
if this were an original engraving with no picture, and a copy
were made of it and afterwards coloured there might not be some
ground for saying that there was a piracy of the art and skill of
the engraver. I should have very great misgiving about it, because
I doubt whether the statutes were not intended to protect the
artist's skill as an engraver only, and not as a draftsman."[869]

It is no defence to an action for infringement that the work has been extensively added to or improved.[870]

Striking prints from the proprietor's own plate has been held not to be an infringement, although it was clearly an unauthorised act and a breach of contract.[871] Thus a printer who had plates in his possession would not infringe the copyright and be liable to penalties by striking copies for his own use, but he would be liable in damages for breach of contract.

_Licence a Defence._--A licence in order to be a defence must be in writing signed by the proprietor in the presence of two or more credible witnesses,[872] but a licensee who is also a purchaser of any plates for printing may presumably without any document in writing print from the said plates without incurring penalties[873] under 8 Geo. II. c. 13 or 7 Geo. III. c. 38, but _quære_ whether such purchaser would not technically be liable to damages under 17 Geo. III. c. 57. A bare licensee, although a purchaser of plates, could not authorise third persons to print from the plates except as his agent and on his behalf.[874]